WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harmonie Mutuelle, Mgen, Mgen Union v. 1&1 Internet Limited

Case No. D2017-0882

1. The Parties

The Complainants are Harmonie Mutuelle, Mgen, Mgen Union of Paris, France represented by Nameshield, France.

The Respondent is 1&1 Internet Limited of Gloucester, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <groupe-harmonie-istya.com>, <groupe-harmonie-mgen.com>, <groupe-istya-harmonie.com>, <mgen-istya-harmonie.com> are registered with 1&1 Internet SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2017. On May 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 3, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In its reply to a request for clarification sent by the Center, on May 5, 2017, the Registrar specified that the language of the Registration Agreement was French.

On May 16, 2017, the Center sent a communication to the Parties, inviting the Complainant to either submit satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English, or to submit the Complaint translated into French, or to submit a request for English to be the language of the administrative proceedings. The Respondent was also invited to submit comments. On May 18, 2017, the Complainant submitted a request for English to be the language of the proceedings. The Respondent did not reply to this request.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2017.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on June 30, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainants in this administrative proceeding are Harmonie Mutuelle, Mgen, and Mgen Union. The three Complainants have a common legal interest in these disputed domain names. Indeed, each domain name affects trademarks rights of the Complainants. Furthermore, the Complainants officially published in 2016 that they will merge in order to create the first mutual health insurance group in France.

The first Complainant, Harmonie Mutuelle, is a leading French mutual health insurance company, employing over 4400 employees. Harmonie Mutuelle develops health prevention, negotiates cuts in costs, has a wide-ranging health care network, and advocates a system of more cohesive social protection. More than 4.5 million people trust Harmonie Mutuelle to protect their health.

The second Complainant, Mgen, is a major French player in social protection. Established in 1946, Mgen manages obligatory health care insurance for professionals in the fields of education, research, culture and communication. Mgen employs 9200 employees, and more than 3.8 million people are protected by Mgen.

The third Complainant is MGEN Union. Istya is a leading French group in complementary health care and is one of the French leaders in social protection. Istya Group protects 5.5 million people in France, through 6 complementary companies, including MGEN.

The rapprochement between the three entities Harmonie, Mgen and Istya was announced to the public in 2016, and in particular on the Harmonie Mutuelle website on April 19, 2016.

With this rapprochement will be created the first mutual benefit group in September 2017.

The aim of the association of the Mgen, Istya and Harmonie groups is to establish a nonprofit health and social protection center, a truly global player in health with a major corporate vision.

The Complainants are the owners, amongst others, of the following registrations:

Trademark

Owner

Office

Reg. Date

Reg. No.

GROUPE HARMONIE

Harmonie Mutuelle

INPI – France

July 9, 2013

4018586

MGEN (device)

Mgen

INPI – France

November 14, 2014

4134248

ISTYA

Mgen Union

INPI – France

June 3, 2010

3743203

ISTYA

Mgen Union

WIPO

October13, 2011

1102005

The disputed domain names <mgen-istya-harmonie.com>, <groupe-harmonie-mgen.com>, <groupe-harmonie-istya.com> and <groupe-istya-harmonie.com> were registered by the Respondent on February 15, 2017.

The disputed domain name <mgen-istya-harmonie.com> displays a parking page indicating that the domain name is for sale and the following message “Minimum offer for Premium domain US$15000”.

The other three domain names <groupe-harmonie-mgen.com>, <groupe-harmonie-istya.com> and <groupe-istya-harmonie.com> redirect to the same website as the domain name <mgen-istya-harmonie.com>.

5. Parties’ Contentions

A. Complainant

The Complainants claim that the disputed domain names <mgen-istya-harmonie.com>, <groupe-harmonie-mgen.com>, <groupe-harmonie-istya.com> and <groupe-istya-harmonie.com> are confusingly similar to the Complainants’ trademarks GROUPE HARMONIE, MGEN and ISTYA. The Complainants claim that each disputed domain name reproduces, in whole or in part, at least two of the Complainants’ trademarks, and that the addition of the generic Top-Level-Domain (“gTLD”) “.com” is not sufficient to escape the finding that the domain names are confusingly similar to the Complainants’ trademarks.

Finally, the Complainants claim that combining several of the Complainants’ trademarks together increases the similarity and likelihood of confusion between the four disputed domain names and the Complainants.

The Complainants further state that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain names. No license, or authorization of any other kind, has been given by the Complainants to the Respondent to make any use of the trademarks GROUPE HARMONIE, MGEN and ISTYA, or to apply for registration of the disputed domain names.

The Complainants further assert that the rapprochement between the three entities Harmonie, Mgen and Istya was announced to the public in 2016. Thus, the registration of the four disputed domain names by the Respondent cannot be a coincidence. The Complainant, quoting past panels, asserts that when a domain name is registered on the same date or shortly after an announcement related to the use of a particular mark, this constitutes opportunistic bad faith.

The Complainants further submit that the fact that the disputed domain names are offered for sale for at least $15,000 USD represents a clear violation of the Policy since this amount is far in excess with respect to the normal out-of-pocket expenses directly related to the registration of a domain name. The Complainants claim that the eventual sale for profit of the disputed domain names to the Complainants, or to a competitor of the Complainants, was the Respondent’s primary purpose in its registration, thus constituting registration in bad faith.

The disputed domain names feature exclusively the Complainants’ trademarks GROUPE HARMONIE, MGEN, and ISTYA. On the evidence and on the balance of probabilities, the Respondent is found to have used the disputed domain names intentionally to attract visitors for commercial gain by confusion with the Complainants’ trademarks, and to have made the registrations with that intention, thus constituting registration and use in bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective cases.

The language of the Registration Agreement for the disputed domain names is French. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

The Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both French and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond formally to the issue of the language of the proceeding;

(c) the Center has informed the Respondent that it would accept a response in either French or English;

(d) the Respondent is located in Gloucester, United Kingdom of Great Britain and Northern Ireland;

(e) the content displayed on the website corresponding to the disputed domain name <mgen-istya-harmonie.com> is in English and the other disputed domain names redirect to <mgen-istya-harmonie.com>;

(f) the Respondent did not respond to nor contest the Complainants’ request for a change of the language from French to English.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

The Panel has also taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in French would cause an unnecessary cost burden to the Complainants and would unnecessarily delay the proceeding.

Having considered all the above matters, the Panel determines under paragraph 11(a) of the Rules that (i) it will accept the Complaint and all supporting materials as filed in English; and (ii) English will be the language of the proceeding and the decision will be rendered in English.

6.1. Multiple Complainants

Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.

The Panel finds that for the purposes of this dispute, the interests of the Complainants are co-extensive, and their grievance against the Respondent arises from common legal interests and it is appropriate for them to proceed as joint Complainants. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1 and section 1.4.2 and panel decisions cited therein.

In addition, in the absence of any objection on behalf of the Respondent, the Panel considers the above to be fair and equitable also to the Respondent, which indeed had the chance to object to this consolidation but did not do so.

6.2. Discussion and Findings

In order for the Complainants to obtain a transfer of the disputed domain names, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith

A. Identical or Confusingly Similar

The Complainants have established rights in the GROUPE HARMONIE, MGEN, and ISTYA trademarks.

Each one of the disputed domain names <mgen-istya-harmonie.com>, <groupe-harmonie-mgen.com>, <groupe-harmonie-istya. com> and <groupe-istya-harmonie.com> incorporates, in whole or in part, at least two of the Complainants’ trademarks.

Therefore this Panel finds all the disputed domain names to be confusingly similar to the trademarks in which the Complainants have rights.

Accordingly, the Panel finds that the Complainants have satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainants have made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent has no connection to or affiliation with the Complainants, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainants’ trademarks. The Respondent does not appear to be commonly known by the names Groupe Harmonie, Mgen and Istya or by similar names. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services. Indeed, the Respondent apparently was using the disputed domain name <mgen-istya-harmonie.com> to display a parking page indicating that the domain name was for sale (“Minimum offer for Premium domain US$15000”), and was using the other three disputed domain names <groupe-harmonie-mgen.com>, <groupe-harmonie-istya. com> and <groupe-istya-harmonie.com> to redirect to the website displayed at “www.mgen-istya-harmonie.com” and thus these domain names were also indicated as being for sale. Owing to the fact that the Respondent has no connection to or affiliation with the Complainants, and that the Complainants have not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainants’ trademarks, the Panel can think of no possible legitimate justification for this use, and the Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence put forward by the Complainants, the Panel is of the opinion that the Respondent was aware of the Complainants’ trademark registrations and rights to the GROUPE HARMONIE, MGEN, and ISTYA marks when it registered the disputed domain names.

Owing to the fact that the rapprochement between the three entities Harmonie, Mgen and Istya was announced to the public in 2016, on the balance of probability, the registration of the four disputed domain names by the Respondent cannot be considered a coincidence. Therefore, it may reasonably be assumed that the Respondent knew about the Complainants’ trademarks and businesses, and this is a strong indication of registrations in opportunistic bad faith.

Moreover, in the circumstances of the case, the Respondent’s offer for sale of the disputed domain names for a starting price of USD 15,000, which well exceeds out-of-pocket costs, is further inference of bad faith registration and use pursuant to the Policy.

This Panel agrees with the Complainants that the disputed domain names feature exclusively the Complainants’ trademarks GROUPE HARMONIE, MGEN, and ISTYA and that therefore the Respondent has used the disputed domain names intentionally to attract visitors for commercial gain by confusion with the Complainants’ trademarks, and it has made the registrations with that intention, constituting registration and use in bad faith.

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain names in bad faith.

Therefore, the Complainants have satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <groupe-harmonie-istya.com>, <groupe-harmonie-mgen.com>, <groupe-istya-harmonie.com> and <mgen-istya-harmonie.com> be transferred to the Complainant Harmonie Mutuelle.

Fabrizio Bedarida
Sole Panelist
Date: July 4, 2017